Copyright preemption
= U.S. copyright law = Overview For most of the history of the United States, state and common law copyright protections coexisted with federal copyright laws.See, e.g., Wheaton v. Peters, 33 U.S. 591, 597-98 (1834) (full-text). But the Copyright Act of 1976 amended Title 17 of the U.S. Code to preempt state laws that provide rights "equivalent to" rights granted under federal copyright law.17 U.S.C. §301(a). Section 301 of the 1976 Copyright Act (17 U.S.C. §301) states, in pertinent part: Despite this preemption, copyright law continues to be intertwined with state law in certain cases, such as those involving license agreements and other contracts governing ownership and use of copyrighted works.See, e.g., Storage Technology Corp. v. Custom Hardware Eng'g & Consulting, Inc., 421 F.3d 1307 (Fed. Cir. 2005) (full-text). State copyright law also continues to apply to sound recordings recorded before 1972, because sound recordings were not protected by federal copyright law until 1972. Consequently, pre-1972 sound recordings may still be protected by state copyrights until 2067.See La Cienega Music Co. v. ZZ Top, 53 F.3d 950 (9th Cir. 1995) (full-text); 17 U.S.C. §301©. Preemption test The Ninth Circuit uses a two-part test to determine whether a claim is preempted by the Copyright Act.Laws v. Sony Music Entertainment, Inc., 448 F.3d 1134 (9th Cir. 2006) (full-text); Kodadek v. MTV, 152 F.3d 1209 (9th Cir. 1998) (full-text); Del Madera Properties v. Rhodes & Gardner, Inc., 820 F.2d 973 (9th Cir. 1987) (full-text) (overruled on other grounds). First, preemption will only occur if the work in question falls within the scope of the Copyright Act as set forth in 17 U.S.C. §§102, 103.Id. Second, the specific state law rights claimed must be commensurate to rights that are protected by the Copyright Act in 17 U.S.C. §301(a).Id. "A 'right' which is equivalent to copyright is one which is infringed by the mere act of reproduction, performance, distribution, or display."Balboa v. TransGlobal, 218 Cal.App.3d 1327, 267 Cal. Rptr. 787 (1990) (full-text). If the state law contains an element that is not present in the Copyright Act which materially changes the cause of action, the state law claim will not be preempted.Id. at 1327. “Under the general scope requirement, Section 301 ‘preempts only those state law rights that may be abridged by an act which, in and of itself, would infringe one of the exclusive rights' provided by federal copyright law.’”''Id.'' at 850 (quoting Computer Assoc. Int'l, Inc. v. Altai, Inc., 982 F.2d 693, 716 (2d Cir. 1992)) (full-text). Accordingly, the court stated the appropriate “general scope” test: "In Data General Corp. v. Grumman Sys. Support Corp.,36 F.3d 1147 (1st Cir. 1994) (full-text). the First Circuit held that ‘if a state cause of action requires an extra element, beyond mere copying, preparation of derivative works, performance, distribution or display, then the state cause of action is qualitatively different from, and not subsumed within, a copyright infringement claim and federal law will not preempt the state action.’”''Daley,'' 2006 U.S. Dist. LEXIS 4061, at *6-7 (M.D. Pa. Jan. 19, 2006) (quoting Data General, 36 F.3d at 1164). “To determine whether a claim is qualitatively different, we look at what the plaintiff seeks to protect, the theories in which the matter is thought to be protected and the rights sought to be enforced."Id. at *7 (quoting Briarpatch Ltd., L.P. v. Phoenix Pictures, Inc., 373 F.3d 296, 306 (2d Cir. 2004)) (full-text). “Not every extra element is sufficient to establish a qualitative variance between rights protected by federal copyright law and that by state law.”''Id.'' (quoting Dun & Bradstreet Software Servs. v. Grace Consulting, 307 F.3d 197, 218 (3d Cir. 2002) (full-text)). “Indeed, courts have taken a ‘restrictive view of what extra elements transform an otherwise equivalent claim into one that is qualitatively different from a copyright infringement claim.’”''Id.'' (quoting Briarpatch, 373 F.3d at 306). Cases applying the preemption doctrine Courts have had the opportunity to consider which state law claims are preempted by the Copyright Act and which are not. Conversion While conversion is generally immune from copyright preemption because it involves tangible property, conversion actions seeking only damages for reproduction of the property — not return of tangible property — are preempted by the Copyright Act.Firoozye v. Earthlink Network, 153 F.Supp.2d 1115, 1130 (N.D. Cal. 2001) (full-text). Unfair competition In National Basketball Association v. Motorola, Inc.,''105 F.3d 841 (2d Cir. 1997) (full-text). the NBA brought two state law unfair competition claims along with four claims under federal statutes, including one claim of copyright infringement, against a manufacturer of pager devices used to broadcast and receive real-time data and statistics for in-progress NBA games. In its analysis, the court stated that “basketball games do not fall within the subject matter of federal copyright protection because they do not constitute ‘original works of authorship’ under 17 U.S.C. §102(a).”''Id. at 846. Even though the court determined that the underlying material at issue was not copyrightable, the court further noted that References Category:Copyright Category:Legislation Category:Legislation-U.S.-Federal Category:Legislation-U.S.-Copyright